UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE

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1 UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/231,086 08/29/2008 Kartheek Chandu 8185P /30/2015 InfoPrint Solutions/ Blakely 1279 Oakmead Parkway Sunnyvale, CA EXAMINER FIDLER, SHELBY LEE ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 01/30/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARTHEEK CHANDU, SCOTT RICHARD JONHSON, AMY E. BUCKINGHAM, and CARL R. BILDSTEIN Appeal Technology Center 2800 Before CHARLES F. WARREN, ROMULO H. DELMENDO, and JEFFREY T. SMITH, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board under 35 U.S.C. 134(a) from the decision of the Primary Examiner finally rejecting claims 1 20: under 35 U.S.C. 102(b), claims 1 4, 6 8, 10, 11, 13 18, and 20 over Claiborne (US 6,765,688 B1); and under 35 U.S.C. 103(a), claims 1 4, 6 8, 10, 11, 13 18, and 20 over Claiborne and Lund (US 5,659,342), claims 5, 12, and 19 over Claiborne, Lund, and Kawaguchi (US 2007/ A1), and claim 9 over Claiborne, Lund, and Hashimoto (US 6,758,541 B2). Br. 6; FOA 4, 5, 10; 1 see also Advisory Action 1 2; 2 Ans. 2. We have jurisdiction. 35 U.S.C. 6(b). We affirm the decision of the Primary Examiner. 1 Final Office Action mailed February 17, Advisory Action mailed April 24, 2012.

3 Claim 1 illustrates Appellants invention of a method (claim 1), system (claim 8), and printer (claim 15) for flushing the nozzles of an inkjet print head during printing (Spec. 0006, , ), and is representative of the claims on appeal: 1. A method comprising: receiving an overlay in a page description language (PDL) data stream having a flushing pattern indicating nozzles of an inkjet print head to flush during a flushing operation; printing a page of print job data; and flushing the nozzles of the inkjet print head during the printing of the page of print job data as indicated by the flushing pattern, wherein the flushing of a nozzle does not occur at a data point of the flushing pattern corresponding to a data point off the page of print data. App. Br. i (Claims App x). Appellants argue the first and second grounds of rejection on independent claims 1, 8, and 15 as a group, relying on the same arguments with respect to the third and fourth grounds of rejection. Br. 6, 7 10, Thus, we decide this appeal based on claim C.F.R (c)(1)(iv) (2012). OPINION The issues raised by the Examiner and Appellants entail the interpretation of the terms of the limitations receiving an overlay in a page description language (PDL) data stream having a flushing pattern indicating nozzles of an inkjet print head to flush during a flushing operation and flushing the nozzles of the inkjet print head during the printing of the page of print job data as indicated by the flushing pattern of claim 1. We give the terms the broadest reasonable interpretation in context consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, (Fed. Cir. 2

4 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, (Fed. Cir. 1989). We determine that the plain language of claim 1, considered in light of the Specification specifies that a flushing operation includes at least printing of the page of print job data as indicated by the flushing pattern provided by an overlay in a page description language (PDL) data stream having a flushing pattern, which flush[es] the nozzles of the inkjet print head. Spec , Figs. 2, 3. We find Claiborne would have disclosed a method for generating a secondary image, which can be one or both of a watermark and an overlay, that is a first body of data from an initial document, onto a second body of data from the initial document, to produce a digital document file which is processed into a digital page of a final document in a page description format (PDL) that is applied to a pixel matrix recorded in the memory of an inkjet printer. Claiborne abstract, col.1 ll.11 38, col.4 ll.14 59, col.5 l.66 col.6 l.l, col.6 ll.23 60, col.8 ll.15 24, col.9 ll.38 67, col.10 ll.26 36, Figs. 3A, 3B. See FOA 4 5; Br Claiborne discloses that [w]atermarks are generally understood to mean objects, such as text or a graphic image, which lie in the background behind the primary page content, and [o]verlays are generally understood to mean objects, such as text or a graphic image, which lie in the foreground in front of the primary page content, but can also lie in the background behind the primary page content, which does not vary from page to page of a document. Claiborne col.6 ll We find Lund would have disclosed a method for on-page spitting, that is, flushing, of the nozzles of an inkjet print head, which purges the 3

5 printhead nozzles across a printed page, wherein after image droplets are fired from each nozzle, purging droplets are ejected as purging dots that can be hidden from view in an image background or over image dots, or hidden in plain sight adjacent image dots, in speed bars, in a watermark design, or in a repeating pattern, which method conserves ink and improves printing throughput. Lund abstract, col.1 ll.12 27, col.2 ll.9 37, col.6 l.7 col.8 l.63. See FOA 5. Lund discloses that hiding purging dots in plain sight can be applied in a pattern similar to a water mark on bond paper in a central location or distributed over the entire sheet in repeating patterns. Lund col.8 ll See FOA 5. Lund also discloses that in one embodiment, a controller fires purging ink droplets from selected nozzles on a page after a certain number of droplets have been have been fired by the nozzles. Lund col.2 ll.21 33, col.5 l.59 col.6 l.6. See Br. 13. In this respect, we find Lund further discloses that nozzles may be purged by firing some or all of the nozzles on a regular basis, such as in a repeating pattern of purging droplets, such as a watermark on bond paper or in another background image distributed over the entire page. Lund col.6 ll.7 11, col.8 ll We find that Appellants disclose that several inkjet printhead nozzle flushing methods were known in the art, including printing a wide line across the bottom of the printed page, randomly firing drops from all nozzles throughout the print job, hiding colored ink with black ink, and flushing all nozzles at the same frequency. Spec On this record, we agree with Appellants that the Examiner erred in maintaining the ground of rejection of claim 1 as anticipated by Claiborne. FOA 4 5; Ans. 3 4; Br We are of the opinion that, as Appellants contend, the Examiner has not established that as a matter of fact all of the elements of a process for a flushing operation for nozzles of an inkjet print 4

6 head as specified in claim 1 are described within the four corners of Claiborne, either expressly or inherently, in a manner enabling one skilled in the art to practice an embodiment of the claimed process without undue experimentation. See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner has not established that the method for generating a secondary image which Claiborne describes to one skilled in the art necessarily inherently includes a flushing operation. We point out that an anticipatory reference must necessarily include an unstated claim limitation because inherency may not be established by probabilities or possibilities, and thus [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient. Therasense, 593 F.3d at (citing Cont l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Indeed, the Examiner has not shown that as a matter of fact merely printing a watermark and/or overlay as described by Claiborne would necessarily inherently flush the nozzles of an inkjet printhead by merely noting that flushing nozzles during printing is known in the art as disclosed by Appellants. Ans. 4. Accordingly, in the absence of a prima facie case of anticipation, we reverse the ground of rejection of claims 1 4, 6 8, 10, 11, 13 18, and 20 under 35 U.S.C. 102(b) over Claiborne. We do not, however, agree with Appellants that the Examiner erred in determining that the combination of Claiborne and Lund would have led one of ordinary skill in the art to modify Claiborne s method of printing a 5

7 watermark or overlay to flush the nozzles of an inkjet printhead during printing as disclosed by Lund, thus arriving at a method which includes a flushing operation encompassed by claim 1. FOA 4 5; Ans. 5-6; Br We agree with the Examiner that, contrary to Appellants position, Lund is properly relied on for the disclosure that the nozzles of an inkjet printhead can be purged, that is, flushed, during printing with the flushing droplets hidden on the printed page in a pattern similar to a watermark on bond paper, and not for the manner in which the watermark is printed. See, e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981) ( The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. ). We are also unconvinced by Appellants that Lund teaches away from printing a watermark to flush nozzles of an inkjet printhead during the printing because Lund would have disclosed an embodiment in which a flushing operation is conducted only after a certain number of droplets have been have been fired by the nozzles. Indeed, Lund teaches alternative embodiments in which nozzles may be purged on a regular basis in a repeating pattern of purging droplets, such as a watermark or other image, distributed over the entire page to be printed. See above p. 4. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that [t]he prior art s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ). Accordingly, we affirm the ground of rejection of claims 1 4, 6 8, 10, 11, 13 18, and 20 under 35 U.S.C. 103(a) over Claiborne and Lund. We 6

8 also affirm the grounds of rejection of claims 5, 12, and 19 over Claiborne, Lund, and Kawaguchi, and claim 9 over Claiborne, Lund, and Hashimoto because Appellants rely on the same arguments with respect thereto that we considered above. Br. 6. Accordingly, we have affirmed the rejections of all of the appealed claims under 35 U.S.C. 103(a), and have reversed only the ground of rejection under 35 U.S.C. 102(b). The Primary Examiner s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a)(1)(iv). AFFIRMED kmm 7